Patent Law Practice Center

Supreme Court Grants Certiorari In Prometheus V. Mayo (Again)

On Monday, the United States Supreme Court agreed to consider whether to set limits on when inventors can patent medical diagnostic tests.  Our friends at Foley & Lardner sent in this article discussing the history of the case, the issues being considered by the Court and the potential impact this case may have on intellectual property in the personalized medicine space.

On June 20, 2011, the United States Supreme Court granted Mayo’s petition for certiorari in Prometheus Laboratories, Inc. v. Mayo Collaborative Services, 628 F.3d 1347 (Fed. Cir. 2010), a case addressing patent eligibility under 35 U.S.C. § 101 of certain method claims relevant to personalized medicine. While the issue under consideration here does not relate to whether isolated genes and other alleged “products of nature” are patent-eligible, the Court in Prometheus will likely address whether and how one can claim methods that take advantage of correlations between an individual’s personal health/genetic make-up and possible health care options.

As discussed in postings on Foley’s Personalized Medicine Bulletin and PharmaPatents blogs, Mayo Collaborative Services filed a second petition for certiorari with the Supreme Court after the Federal Circuit upheld the claims (for a second time) on remand after the Supreme Court’s decision in Bilski v. Kappos (2010). Representative claims in Prometheus include: (more…)